.\j^) H^ AEGU.MEXTS 



BEFORE THE 



COMMITTEE m PATENTS 



OF THE 



HOI SI-: OF KKIMIESENTATIVES 



ON 



II. n. i;r)7n. 



ArTllOKIZINi; TIIK kKCISTRATlON (IF Till-: NAMKSOF llOR' 
CI LTIKAL PKunrCTS ANH Tn IMJOTKCT TIIK SAMK. 



MAliCH 2S, itHH). 



COMMITTEE ON PATENTS, HOUSE OF KErHESENTATlVES, 

FI FTY-NINTII CONCiRKSS. 

FRANK I). Cl'RRIKR. New HAMPf^lllRK, Chairman. 

SOLOMON R. DRF>iSER. Pennsylvania. tharlKS MriJAVIN. Illinois. 

JOSEPH M. DIXON. Montana. WILLIAM SL'LZKR. New York. 

EDWARD H. HIN.sHAW. Nebrask \. GEORGE S. LECJARE, South Carolina 

ROBERT \V. BoNYN(iE. Colorado. EDWIN Y. WEHH. North Carolina. 

WILLIAM W. CAMPBELL. OHIO. ROBERT (i. Sol TIIALL. VlRfilNlA. 

ANDREW J. BAR<'hVeld. PENNSYLVANIA. JOHN GILL. Jr.. .Maryland. 
JOHN C. CHANEY, INDIANA. 

Edward A. Barney. Clerk. 



WASHINGTON: 

GOVERNMENT PRINTING OFFICE. 



^ 



"^ 



T^ 



MAY 






AII(;r.MKNT ON H. II. l:;:,7(i. AlTIKHnZlNi; TIIK RKCISTRATION 
OF TlIK NAMKS oT IKHITh I LTIKAI. I'KoDrCTS AND TO 
rUOTKlT TlIK SA.MK. 



( '( • M M irrKK < » N I *ArKNTS. 

IIolSK OF HKriiKSKNTATIVES, 

Wiishiittftn,,, P. ('., Wriln^ sthii/. .]f<inh ,JS. Ifin.',. 

Jlic coiiiiniitcc met tlii^- <);i\ ai lo.))!) o'clock a. iii.. I Ion. Frank 1). 
( 'iirricr in tin* diaii-. 

Pi'cscnt : M('--r-. ('lurifi- ( cliairnian ). DrcssiT. nin>ha\v. lionynge, 
("lian<'V, Mciiavin. and (iill. 

'\\w CiiAiHMAN. (irntK'nH-n. \\v will n(»\v taUc up the Kill known a> 
llic lioil icnit iiral liill. No. i:'),'»7<». \\v an* i-«'atl\' to lirar nou now. Mi-. 
Kirk. 

STATEMENT OF MR. HYLAND C. KIRK. 

Ml'. Kih'K. At \\\v >ii^^irt'-lion of IJM* cliairnian of tlu' coniinittco wo 
liavr made an ainmdinmt. or rather, arran<r«'d the hill a> an aniond- 
nicnt to the laws of the Fnitcd States relatin;; to the re«ri>tration of 
irade -marks, as it would Ik' iM'tter in that form. doul)tless, if it were 
ado|)te«l. It may Im' well to read the hill. There i^ a clause, perhaps, 
or more, that ha\e heen sliL'"htly chan^'"ed to m<'et the nece>.-iti«'s of the 
case. I Keadinj;:! 

A BILL T»> amend the Uwsof the United States relatint; to the re»fistnition of trade-marks. 

Be it rnartcd hjf thr Srtmt( mnl lluusv of Rrprt srntiitirrs o/ thr Vnitrd States 
of Atnrrica in Cniif/rrss a.'<sriiitilr)l. That the art eiititI«Ml "An act t(» authorize 
the registration of trademarks nsi'M in <nimn«*rr«» with forei^rn nations or ainon^ 
tlio several States or with Hulian tril»es. and to i»rote<t the same." approved 
Fel>ruary twentieth. nlnettHMi hnndre<l and live. \h\ and the same is hereby, 
MinenthMl l»y inserting; after section tw<'nty-ei);ht thi'nnif thrtv se<'tions, to be 
Ixiiown as si^'tion 'JSa. se<'tion *JSh. and s«M-tion 2><c. as follows: 

Skc. *_*Sa. That any iH»rson who has discoven'<l. <»ri.i:inate<l. or introduced any 
new variety <tf plant, hush, shruh. tr«M'. or vine. :ind j.;ives an<l applies thereto a 
name, may obtain registration for su<h name l»y coniplyin;; with the following 
re»|uirements : First, by tiling; in the Patent ( )trice an application therefor in 
writing:, adtlressed to th«' Connnissioner of Patents. si;;ne<l by the applicant. 
spe<'ifyin;r his name, donucile. bx'ation. and citizenship, the spe<ies or variety 
of horticultural product to which such name is applied, and the name or names 
of the parent stock from which such variety is derivinl. Second, by paying into 
the Tn'asury of the TnittHl States the sum of ten dollars and otherwise comply- 
ing with the provisions of this m-t and su<-h rules and regulations as may be 
prescriluil by the CNanmissioner of Patents: Pniri<l<(l. That no name for which 

3 



4 ARGUMENT ON H. R. 13570. 

application for registration under the provisions of this section may be made 
shall be refused registration unless such name is : 

1. Identical with a known unregistered name for the same species or variety 
of product belonging to a person other than the applicant ; 

2. Identical with a previously registered name for the same species or variety 
of product ; or 

3. Has been dedicated to the public by the discoverer or originator of such 
variety. 

Mr. BoNYNGE. Before you read section 28b I Avant to ask you is it 
your understanding" of that section that any person Avho has discov- 
ered or originated such a variety of plant as is described in the sec- 
tion of the bill would be entitled to a trade-mark for the plant, 
whether or not it is used in interstate commerce? 

Mr. Kirk. Whether it is sold or not. 

The Chairman. A^T^iether or not it is used in interstate commeg:-ce 
is the question. 

Mr. Kirk. That is under the law. Do 3^011 mean whether it would 
be entitled ? 

The Chair3ian. ^Yli ether it is actualh' used in interstate commerce. 
That is the question. 

Mr. BoNYXGE. Do you mean to say if a man ever originated a new 
plant and had not used it in interstate commerce at all that under 
your bill you intend he should have a trade-mark on it? 

Mr. Kirk. Xo ; that is not the purpose of it. 

Mr. BoNYNGE. Would he not under the language of your section ? 

Mr. Kirk. The idea is not to prevent the sale and dissemination, 
but to protect 

Mr. BoNYNGE. That is not the question. If we have any constitu- 
tional power at all to legislate upon the question presented by your 
bill, it must be because the article is the subject of interstate com- 
merce, and it must have been used in interstate commerce before we 
Avould get any power to legislate upon the question. Under the 
language you have prepared anybody who has discovered or devel- 
oped such a plant as described in the section, whether it is used in in- 
terstate commerce or not, w^ould still be entitled to register a trade- 
mark upon that particular plant. 

Mr. Kirk. This contemplates, of course, the sale and dissemination 
of the article. 

Mr. BoNYNGE. It would have to be disseminated before we would 
have an}' authority. 

Mr. HiNSHAAV. The general act only pertains to things which have 
been used in interstate commerce. 

Mr. Kirk. It would hardly be necessary to make an argument upon 
that point. 

The Chairman. We can not protect the rights of anybody Avlien 
he confines his business to a single State. We have no constitutional 
power AvhateA^er to legislate upon it. 

Mr. Kirk. I did not catch the point. -There is hardly a x>roduct 
that has been originated by any propagator that would not properlv 
come Avithin interstate law. For instance, take the CraAvford peach; 
take the Bartlett pear, or any of those old products. Of course thev 
haA^e gone all OA'-er the country. The same thing is true of many 
new products, and they are in process of being disseminated through- 
out the Avhole country, and Avould naturally and inevitably come 
under the interstate-commerce laAv. 



ARGUMP:NT on H. R. 13570. 5 

The CiiAiH.MAN. I think the understaiuling of the committee is that 
it will be neeessarv. lu'fore you can <^et a Federal trade-mark, to show 
that you are actually usin*r that mark on ^oods within the scope of 
interstate commerce. Vou can not anticipate that use. 

Mr. Kirk. That is not the idea at all. There is no desire to antici- 
pate, excrpt to have a law hy \\hich the person who is usinof it may 
oljtain his righl>. 

Mr. I^oNYNGE. The lan^uatre of your bill provides that any person 
who ha> discovered or introducecl a new variety of plant shall be 
given th«' ri«;hl to r(';j:i>ter a trade-mark. 

Mr. lliNsiiAW. 'I'hat could be amended by adding the words '* and 
used in interstate cummerce." 

Mr. J><»nvn(;k. ("an he do it now under the present trade-mark law? 

The C'irAiR.AfAN. No. In the first place this opens the door wide to 
register anything with a trade-mark. 

Ml". lioNVNOK. Yes: regardless of the description. 

.Mr. KiHK. That involves the main j)art of this argument, and if 
you will allow me to go through with it I will be glad to answer any 
questions. 

The CiiAiKMAN. Certainly: proceed in your own way. 

Ml". K ii;k ( H'ading) : 

Sk< . I'M", 'i'li.it eviTv <er(i(i("ite of re;:ist ration issunl on an njnilication for 
the rej;is(ration of tlir name of a liortienltural jinnhict shall <<»ntain a ij^rant to 
the n';:istrant. tlie h»ual repn'Sfntjitives or assi>:ns of such registrant, for the 
lenn of twenty years of the «'.\rluslve rl^jlit to propa^rate for sale and vend such 
variety «tf hortUultnral product luider the nanu* so re;:istere<l throui:liout the 
rnlt«'<l States and Territorii's tln'nn.f: /'turiilnl. That the tlowrrs. fruits, or 
f«MMl p'oduets produo'd fn»ni stuli re^isteri'd variety may !»«' s<dd l»y any person 
whatsoever for any puriMise other than that of propajjatlon. 

TIm' Chaikman. ^'ou do not confine that to interstate* connnerce. 
That proposition i- a> dearly micon^titutional a> anything can be. 

Mr. Kii:k. hiter>tate commerce contemplates the entire Fnited 
State-. 

Th(" CiiAiUM AN. ^ (Ml contemplate conimeice within the States as 
well as Ix'tween the States? 

Mr. Kirk. As I umlei-stand the law. interstate commerce d<M's not 
j)revent peo|)le from -elling in individual States. 

Mr. n(>NVN(;K. No: but when you do m'11 within an individual 
Stat*' it is a mallei- for the regulation ot" the Stale and not of the 
Feclei'al ( io\ eniment. 

Mr. KiK'iv. if it i> confined (o tjiat Siah'. y<'<: l)Ut the interstate- 
commerce provision <1(m's not say anything ai)ont the sales within the 
State, if it is sold U'twciMi the State-^. 

Mr. I)oNVN(.K. The only portion we can legi>l:ite ii|)oii is tiiat which 
i^ interstate in its charact«'r. "^'our bill attempts to regulate that 
which is contined within the limit- of the State as well a^^ interstate 
commerce. 

The CnAiKMAN. ^ On can not combine the two. The Supreme 
(^)urt ha> e.xpre^isly declared it is unconstitutional. 

Mr. BoNYNCK. ^'ou include* business within the limits of the State, 
and that is the objection. Ihe Supreme Court has decided that when 
yon do that you render the whole bill unconstitutional. 

Mr. Kirk. Do you mean to tell me that when the patent law was 
constructed Congress had no jurisdiction^ 



6 ARGUMENT ON H. R. 13570. 

The Chairman. That is under another clause of the Constitution 
altogether. 

Mr. BoNYNGE. That has nothing to do with this. If we have any 
power over trade-marks at all, it is under the clause of the Constitu^ 
tion which gives to Congress the power to regulate interstate com- 
merce. 

Mr. HiNSHAAv. If you had a horticultural article which was the 
subject of interstate commerce, and you had a registration, and it had 
been used, it would protect that article probably Avithin the State 

The Chairman. On its journey betAveen the States, and as long as 
it remained in the original package or in the hands of the original 
purchaser. 

Mr. BoNYNGE. That is all. 

The Chairman. That is all. The minute the package is broken, or 
the minute it is once sold, the Federal Government loses all control. 

Mr. Hinshaav. This bill could be amended to coA^er that. 

Mr. Kirk. There is no reason Avhy it could not be restricted in that 
section — 

Provided, That the flowers, fruits, or food products can be sold for any pur- 
pose other than that of propagation. 

This bill does not attempt to put any monopoly upon the sale of 
food products, nor the seeds, plants, cuttings, and so forth, designed 
for propagation. [Reads:] 

Sec. 28c. That all names of horticultural products presented for registra- 
tion shall be subject to publication, opposition, appeal, and interference pro- 
ceedings under the same terms and conditions as is now provided for trade- 
mark applications ; and that the remedies and penalties provided for the in- 
fringement of trade-marks shall be applicable to horticultural names registered 
under the provisions of this act. 

The Chairman. The matter you haA^e read you can file Avith the 
stenographer. 

Mr. Kirk. I Avill. 

It is true that neither patent nor copyright laAvs nor trade-mark 
laAvs as they noAv exist are exactly fittxsd to protect propagators of 
neAV A^arieties. The Avords in the patent laws " to manufacture and 
use " Avould not, of coiu'se, apply to the development of plants. Books 
become parts of libraries, Avhile plants become parts of estates. There 
is no bearing of the laAv upon the other situation. 

The design of this bill is in its broad aspects first to protect the 
people of the United States and encourage them in the pro])agation 
of ncAv varieties, and developing the best, to secure the A'^ery l^est vari- 
eties to the different regions. The State of Minnesota ha*^ recently 
offered a thousand dollars for the best apple adapted to that climate. 

Second, the design is to protect originators and to pro}:>agators in 
their right to groAv, or to name, to disseminate and sell their products. 
NoAv, it is unfortunately true that in the ])ast those peo])le who have 
devoted their lives, or much of their liA^es, to the Avork of propagating 
have recei\^ed very little reAvard, if any. I haA^e made a pencil list 
here of some of the names. Among them is the Eca^ J. K. lleasoner, 
who originated the Senator Dunlap straAA'berry. It is one of the 
best selling and commercial plants of the kind, and yet he received 
little or nothing for it. Ephraim Bull, Avho propagated the Concord 
grape, died in poA^erty. Judge Miller, of Bluffton, Mo., Avho spent 
his life in this Avork, Avas ahvays poor. F. W. London, of Janesville, 



ARGUMENT ON H. K. 13570. 7 

Wi-.. li:i(l tlu' saino experience, and died pixw. Amo^ Miller, of 
( oliinil)u>. Ohio, was many yeai-s enfra<red in this work 

Mr. BoNYNGE. I do not like to interrupt you. l)ut the main purpose 
of tliis bill, after all. as I suppose you are now ar<j:uing, is to fjfive 
a monopoly for twenty years to the man wlio oriirinates the ])lant. 
or shrul). oi' tree, or vine, or whate\ cr it may he. is it not (* 

Mi-.KinK. It i> to >/i\\' iliem some chance to recei\-e sometliincr for 
their hd)or. 

The CuAiK'M AN. It (h)e- *r\\{' thcui (lie monopoly to i)roduee and 
sell undci- :i name which they <rive to tlic phmts. 

Mr. l)n.\vN(;K. Not oidy unch'r tlie name. l)ut a monopoly to stdl 
tiiai particuhir variety under any name, no matter what name. 

Ml". KiHK. No: I lK'*r pardon. Only mider the name refjistered. 

Mr. HiNsiiAW. That refers to any chan<r<' from the existin*:: plant 
in a -mall (h'<rree. or chan«re in the flower, or <i/,(» of fruit, or taste, 
or S4)methin<r of that kind ( 

-Ml*. KlHK. ^ (-. 

.Mr. HnNVN(.K. Where will we <rv{ the power to do that ? Wv can 
prevent anybody eKe from u>in«r that name, hut 

riic CiiAiHMAN. ^^'c lunc not the constitutional powci- to pass a 
hill a> hroad a> thi>. 

Mr. KiKK. Vou will. :it Ica-t. ;r«'ntlcmcn. >ee the ju>ticv of what 1 
ha\i' to -ay. and if this measure (kn's not jrive tiie recpiisite relief, pQV- 
haj)> a moditicalion of the hill would do so. There is no qu<'stion 
hut that thi.-« class of inve>tipitors (Mi^xht to he rewardi'd. Luther 
liurhank. who has recently come into prominence as heiuir very suc- 
cessful in this line, was poverty stricken for vi*ars. and until the 
Cai'ne^ric In>titute came to his ii'lief he wa> in almost ahjcct poMMtv. 
The ^^'ueral principle of |)rotection was ju>t the >amc. I take it. 

Ml*. IIiNsiiAU. I do not -uppose anybody would dispute that 
|)ro|)o^it ion, that thc-c pc(»j»lr oui^ht in >ome way to be i-ew.irdcd for 
their lon«x ctloii- in biin^dn^' about new \arietie> and better products. 
The only (pie.stion is how we can reach it ( 

Mr. I>onvn(;k. \\'e aie actin;r under the Constitution. W'v have 
only such power a- the Constitution <_'"ive> to Us; and. a- I view it. 
this is an attempt to include somethin<j under or ext*'nd the patetit 
lawv. as well a-- the trade-mark laws in <ome of its features. 

Mr. IIiNsiiAW . It seems to U' more under the |)atent law than under 
the trade-mark law. 

Mr. KiHK. If you find thi> can not i)e ac<'(unpli>he(l in thi< way, it 
miirht lead to its accomplishment in another way. 

There is a third clas: that is. the j)urcha>-er>. that need to lie pro- 
tected a> well a- the pi'oi)aL''ators. an<l we think that this law has that 
idea. In thi"^ bill ;i> pre-ent«'(l tln-re i> that idea of protcM-tinir the 
purchaser ami j)re\('nt in^'' inirea>onable i-ate> to some extent : and tin? 
purcha-er aUo -liould be j>rotected in recei\in<r genuine specimens. 
This matter has received attention from hort iodt nral and other 
-ocieties for many years. 

Here is a letter which was written in 1S9I). and I will just read a 
j)ara<rrap]i from it. It is from a very prominent nursery fii-m in 
western New .^'ork. Jackson c^ Perkins ("ompany. Newark. Wayne 
County. N. ^'. One paragraph reads this way: 

We take this (>n|M)rtiinity ef iiniiiirin;: whether you ;n*e |K).<se.>*se«l of any 
spe<'inl iTifc^nnation upon the suli.i«'<-t of tr;uh»-ni;irks in connection \\ith the 



8 ARGUMENT ON H. R. 13570. 

names of new verities of fruits or plants of any kind. It has been a very im- 
portant question with us and with many other nurserymen as well to know how 
to protect one's self in the introduction of a new variety of fruit. Many new 
introductions in the line of fruit and flowering plants are extremely valuable, 
and are the result of years of the most careful work. It would seem to us that 
the originator of such a variety is as much entitled to protection as the patentee 
of some new valuable invention, but so far as we know there is no such protection 
procurable under the present laws. If 3-ou are fully informed upon this subject 
we should esteem it a very great favor if you would kindly tell us what you 
know about the matter, as it is possible we might require your services upon 
some occasion in the near future. 

Mr. BoNYNGE. My present view is, if you can get any protection at 
all, it will be by an amendment of the patent law rather than amend- 
ment of the trade-mark law. 

Mr. Gill. Would plant breeding be in the line of animal breeding? 

Mr. Kirk. All life has similarity. There is no question about that. 

Mr. Gill. You can not grant a patent right to a fellow who starts 
a string of trotting horses or running horses ? 

Mr. Kirk. That is not the sam.e as in this bill. 

Mr. McGavix. It is the same principle, pretty much. 

Mr. Kirk. The man who secures a superior breed of trotting horses 
gets a superior prize. 

The Chairman. The fellow who originated the Tom Lawson pink 
certainly got a good price for it. 

Mr. Kirk. They get quicker results than in the case of plants ? 

In the proceedings of the Horticultural Society for 1901 this matter 
Avas discussed, and Jacob Moore, of Attica, N. Y., now of Canan- 
daigua, N. Y., read a paper on " Plant Patents," in which he advo- 
cated the establishment of a new bureau or division under the Patent 
Office, which should be occupied with the registration of patents on 
plants. I have read that over with great care. I also have a letter 
from Mr. Moore, but the project seems to be too cumbersome for 
adoption at present. It involves a number of new officers and experts 
having special qualifications, and I think it would hardly be favored 
by this committee or by Congress. But the trade-mark plan I have 
looked into ver}^ carefully, and it seems to me feasible, even if this 
bill does not meet your requirements and suggestions. 

Mr. BoNYNGE. From your reading of the bill I am convinced that 
it is wholly unconstitutional. 

Mr. Kirk. That you will have to consider. It has been urged in a 
Supreme Court case- — one objection has been urged — that " the pro- 
tection of a trade-mark can not be obtained for an organic article 
which, by the law of its nature, is reproductive." [Laughter.] 

But let us look at that for a moment. The answer is that such pro- 
tection should obtain if it is a matter of justit^e, and every inventor 
uses natural materials in his work and works under natural law. pre- 
cisely the same as the propagator in that respect. 

Mr. BoNYNGE. In other words, you do not think the court decided 
it right ? 

Mr. Kirk. This was not a decision, but a reference in a decision. 

Mr. BoNYNGE. You are reading from the decision now? 

Mr. Kirk. I am reading from a part of a brief filed in the case. 

The Chairman. Not from the decision ? 

Mr. Kirk. No. It has been urged that " no one can obtain protec- 
tion for the exclusive use of a trade-mark or trade name which would 
j^ractically give him a monopoly in the sale of goods other than those 



AKca MKNT ON H. H. LioTO. 9 

j>nKlu«-<Ml ()!• made l)y liinisclt'.** That is in the decision. This is 
(•()n<-(Ml(Ml and is taken into account in the bill as presented. It is the 
uork of tlic propa<rJitor himself that we are anxions to protect — the 
work of tliose men who may spend their lifetimes in originating new 
\aiietic-. That is the purpose of this hill. 

Mr. M< (lAvix. The only prot<'ction he would have would i)e that 
a man could use some strawbeiTV under another name, for exami)le. 

Mr. H(».\vn(;k. I^*t a man register a trade-mark for this ])articular 
kimj of mat<-h. for instjincc. | Indicating.] Anylnxly else can make 
a similar match. l)Ut no one would have to take the name of the ** Blue 
Kihhon I^arloi- Maldi." lie could make the match and call it some- 
thing eUc. 

The CiiAiH.MAN. "\'c-: that is one of th»' distinctions between i)at- 
ent> an<l trad<'-marks, 

Mr. lIiNsiiAW. U'he match might he palentci. 

The CiiAiKMAX. And ijoImxIv else can sell or make the >ame match. 

Mr. BoNYXCiE. When it ha- a trade-mark nobody can use the same 
t rade-mai'k. 

Mr. KiKK. I >liouhl haxc to a<lmit that there i^ a distinction be- 
tween a trade-mark and a |)ateni. 

Mr. ]5onvx<;p:. Ytn\ are trying to combine th«' patent feature^ l)V 
giving the exclusive ri<^ht. 

Tlie CiiAiH.MAN. It is imj)ossible to coml)ine the two. becaus«» the 
autlwiritx that Congress ha> i> deri\ed from different clau^e< in the 
Con-tit uti«»n. 

Ml-. linXYXOE. Absolutely. 

Mr. Kii:k. I suppo-e they all >piMng from the >>aine |)rin<'i|)le of 
justice, and the (jue.slion whelhei- ;i wiuw -linul.l br pnttected <tr not is 
the first. 

.Ml". Ii(»NV.N<;K. Xo: the tii--t ([notion i- whether Congiv» lia- the 
j)ower to act. 

The CiiAiKMAN. ihat i- the fii-t <|ne-ii(»n. whether the Constitu- 
tion gives lis the power. 

.Mr. Ktiik. 'f'he i-ea>on fni ( ow^n--- i- \n |)n»tect the right< of citi- 
zen-. 

Mr. l»oN'^ \<.F.. No: the rea-on foi- the existence of Congress is to 
carry out the Constitution of the I'nited State-. 

Mr. CiiANKv. The Constitution limit- n-. 

.Mr. Nb (iwiN. There must be fixe<l rule- for y(»ni- own protection. 

Ml-. KiHK. I want to urge upon the committee the urgent need for 
thi- law. and if thi- bill as |)re-ente(l i- not exactly the thing, i^ may 
be modified. 

Ml-. HiNsiiAw. lias this bill had the <on-ideration of eminent 
liade-niark attorneys^ Have they given it can*ful review? 

Mr. KiiMx. It has b',»en considered by M'vei-al. Som<' have not ap- 
])r()\('d of it. and other- thought it might be oj)ei"ative. 

Now, I pi-e-ented here -ome week- ago a letter received from 
Colonel Hrackett. I have here the original letter, which T will read 
I reading] : 

W.\SHiXGTOX. D. C. March .^. 190G. 
iTof. II. r. Kirk. 

\o. i'li \orth i'dftitol stnrt. Citii. 
Dkak Trokkssor KntK : Ut'ferrinj; to the bill H. R. li^-jTO. a bill .•uitlioriziiig 
the re«.:istrMti<m of tln' iiiunes of horticultural protlucts and to protiMt the same, 



10 ARGUMENT ON H. R. 13570. 

a copy of which you left with me, allow me to say in advnuce that yon have 
my hearty indors^ement and support of any measure that has for its object 
the protection of property rights of persons who have ))> their skill and per- 
sistent effort originated any new and valunble species or v.-iriety of fruit or 
plant, and if you are successful in having a la^\■ enacted tlint shall accomplish 
in every respect the object aimed at in the above bill yovi will have conferred 
a great good upon a class of workers who are worthy and entitled to the 
benefits derived from such a law by protecting their rights to such i-ropcrty. 

In regard to the bill I Avould suggest that line 2, page 2. be changed so as to 
read, "the same species or variety of i)roduct;" and that line 4 be changed 
to read the same as line 2 ; and inasnuich as the courts have decided that geo- 
graphical and surnames can not be used as trade-marks. I would suggest *that 
the bill be so framed as to comply with said ruling. There may be other points 
that you may find necessary to make the bill effective. 

Hoping you will succeed in your efforts along this line, I beg to remain. 
Sincerely, yours, 

G. B. Brackett, Pomologist, 

He makes some slight changes, but otherwise not important. 

Here are some letters also from propagators. I would like to read 
to you one from Mr. Crawford, of that famous family which propa- 
gated the Crawford peach. 

The Chairman. Will you leave those with the stenographer? 

Mr. Kirk. Yes. He says [reading] : 

Cuyahoga Fali.s, Ohio, March 19. 1906. 
Mr. F. T. F. .Johnson, Washington. D. C. 

Dear Sir : Replying to your favor of March 16, I am very much interested in 
the bill introduced by Mr. Allen, of Maine. It will be an act of simple justice 
to originators and a great protection to horticulturists who are progressive and 
want to test new and improved varieties. As it is now an originator may 
work ten or twenty years to produce a variety worth naming and introducing. 
If he attempts to introduce it himself he will hardly get enough out of it the 
first year — the only year he controls it — to pay the printer. The second year 
he is undersold by competitors, many of whom never saw the real thing. 

Nurserymen commonly pay but a trifie for a new fruit because they can have 
control of it so short a time. If the owner of a new variety could have control 
of it for a term of years people could buy plants of him with the assurance 
of getting stock true to name. As it is now much spurious stock is sold by dis- 
honest men who want to reap the benefit of another's industry. If an originator 
could have some protection he would be encouraged to have his products thor- 
oughly tested at tlie exi)eriment stations before putting them on the market. 

The Senator Dunlap strawb.erry was originated by .1. R. Reasoner, an old 
preacher. AVhen it was introduced he received but a little for it. and yet it is 
the greatest money-maker in the country at this time. Ephraim Bull, who gave 
us the Concord grape, died in poverty. It is well known that originators are apt 
to go unrewarded. This has discouraged many from engaging in the work. 
What patents have done for manufacturing this bill will do for horticulture. I 
sincerely hope it will pass. 

Yours, sincerely, M. Crawford. 

Here is a letter from Mr. AY. J. Graves, fruit grower and originator 
of the Graves peach [reading] : 

Perry. Lake County, Ohio, March 1. 1906. 
F. T. F. Johnson, Washington, D. C. 

Dear Sir : Yours of the 2(3th at hand and contents noted. Can say that we 
can heartily indorse the bill inclosed. Think the originator or introducer of 
new varieties of fruits should be protected. Have noticed in the horticultural 
papers that few new varieties are being introduced. We think the reason is 
that the introducer has no protection. Just as he gets a good thing on the 
market the nurseryman takes it up and away goes all his profit. We know this 
from experience. 

Yours, very truly, ' W. J. Graves. 



ARGl'MKNT ON H. R. 13570. 11 

Here i- oiic from John F. Sne^^d, proprietor and j)r()pa<rator of gen- 
eral niirxTV >tock at Tvler. Tex., in re<rard to the registration of hor- 
ticnhnral pro(hicts and tiic protection of the same [reading] : 

Tyi.kr. Tkx.. MnrrJ, .9, HKKl. 
l\ 'V. l\ .loll .\>().\. \\'(isliiii;/f()ii. />. ('. 

In.KH Siu: I \\:\\v vv:u\ Mr. Allrn's (of M:nn«') bill, iiitrodiiccd in Fifty-ninth 
CtHiKn'ss. lii-st st's.sion. in rt';:iinl to the rcjristration of horticnltnrMl i>ro«lntts 
nnd tlic |»n»t<'ctl<tn of ssinio. all of wlii<'h I licartily indorse. 1 trn^t yon will 
rt'inU'r any assistanc<' possiliU' in havinjz tlio lull pass, as it will tMnihlo the 
i.riu'inators or intr«Mhi<t'rs of now frnits to i;«'t the henellt of their labors iu 
originating.', advert isin;r. and disseminating; same; otherwise thert' will he very 
littU" «'m-oiirairenieiit f<»r .in attempt to create new varieties and intro(hi«-e same. 
N'rry respe<-tfnlly. 

J NO. F. SNKFJ). 

I have a siniihir letter from Sherman. Tex., from the Cra^vford 
Nurserv and Orchard ('omj)any | r<'adinii: | : 

SiiKK.M.\N. Tkx.. March •?. /'"'">. 
V. T. F. .Johnson. \\'(isliiii;;(ini. h. C 

I>KAK Sik: We have y«nir comninnic.-.tion of the LMUh. toirether with a i»ropostHl 
law. W'i- are writin;: onr ( 'on;:rc<snian. Mr. iJandell. on the snl».iect. aiid appre- 
ciate yonr interest in tin- matter, and hop,- that this law will he hcncfjcial to the 
intro«incers of new frnit. 

With kiiuh»st regards, we hej: to remain. 



^ ours. \er\ tnih". 



( 'oM.MKKCI.VI. .N'lKSKKY AND (M{( IIAI'.D CoMfANY. 

•Ino. S. Kkkh. 



Nkwakk. N. v.. Mnrrh n. I'MiU. 

In rcjilx to yonrs ot the l.'ith. 
Mr 1'. T. F. .loiiNsoN. \\ a.shiinitdii. It. ('. 

Hkau Sik: Y«*s. we are v«'ry mnch interested in the liiil leceiitly iiitrodiircd 
in Congress f«ir the protts-tion of people introdiicin;: new varieties of plants. 
We had for;;otten ever liavinu written yon npon the snhje<t. hnt it is one in 
which we are |t«'rnianently interest«Ml. and it wonld appear to ns that the hill, 
of which yon inclose a copy, is one which covers the nec<'ssities of the case 
very satisfactorily. If there is anythiii;; that v.xw he don*- l»y mn-serynu'ii to 
assist its passa;;e we should he ^lad to coopcrntc in doini; so. 



Yours. trnl\' 



Ja( KsoN Fkkkins Co. 



Ko( lll-STKK. N. v.. l/r//r// >/. I'.XK'u 

Mr. 1". r. F. .loiiNsoN. W'lisliiiiiitnii />. r. 

Dkai! Sik: V(»nrs incl(»sinv; cojiy t»f a hill (II. U. 1:;.'mO) anthoi-izinj: the reg- 
istrati<tn of the names «>f horticidtnral prodiKts. and to prot«'rt the same, to 
hand, for which please accept om* best thanks. 

We ar«' ^'lad to note the introduction of this bill, as we think much p>od will 
com*' of it to the raisers and introducers of new varieties. 

We think, however, it shouhl in<lu<le a i)enalty clause reimhtnsin^' the reg- 
istrant for all moneys n^eived from unauthorized sales where jdants have been 
«-m-reptitiously ^rown and sold by unscrupulous parties for the sake of gain. 

rica<e to ke<'p us advised of the proj;ress of this t»ill so we may write our 
lt«'prcscnl.itivcs in ('(»n;:re^s uririn.ir the passajre of it. and you will much 

obllire. 

Yours, ti-ulv. John Charlton & Sons. 



12 ARGUMENT ON H. R. 13570. . 

McKiNNEY, Tex., Fehniary 1.5. 1906. 
Mr. F, T. F. Johnson, Washington, D. C. 

Dear Sir : A copy of H. R. bill 13570 has been examined and heartily ap- 
proved. 

The passage of this bill will be very encouraging to those who are spending 
their lives in the work of improving horticultural products. It will encourage 
a large number of intelligent experts who are ready to enter this most impor- 
tant field of discovery. They only need protection such as this bill will give. 

Such a bill can only do good — no possible harm can arise from it. 

Hoping you will succeed in this laudable work, 

I am, most respectfully. E. W. Kirkpatrick. 



Santa Rosa, Cal., Marcli 21. 1906. 
F. T. F. JOHNSOJNT, Esq., Washington, D. C. 

Dear Sir : The bill introduced by Mr. Allen, of Maine, authorizing the regis- 
tration of the names of horticultural products and to protect the same I think 
is of the utmost importance. 

I can not see where any of its provisions can in any way injure any person, 
and if protection is available for mechanical and chemical inventions, why in the 
name of common sense should not new combinations and inventions and discov- 
eries in plant life be also protected? 

I am most heartily in accord with this bill, and see no reason why in its pres- 
ent form it should not be of as much of an advantage as is a coypright or patent 
on any other product of man's care, labor, and skill. 

Sincerely, yours, Luther Burbank. 

Mr. BoNYNGE. I think the question to be regarded here is the con- 
stitutional question first. 

The Chair:max. As the bill is drawn, I think the members of the 
committee very clearly feel that it is unconstitutional. We would 
be glad to hear any gentleman in that connection. I doubt if the 
committee cares to hear any more as to the justice of the proposition. 

Mr. BoNYNGE. I think it is a question of our powder — the constitu- 
tional question. 

Mr. HiNSHAW. I suggest that the gentleman be allowed to look it 
up further and report to us. 

The Chairman. Is there any other gentleman who desires to be 
heard on the bill ? 

STATEMENT OF MR. F. T. F. JOHNSON. 

The Chairman. For whom do you appear, Mr. Johnson? 

Mr. Johnson. I appear for a number of nurserymen and also for 
a number of propagators. 

Mr. HiNSHAW. Are you a lawyer ? 

Mr. Johnson, Yes. 

Mr. HiNSHAW. Do you live here in the city ? 

Mr. Johnson. Yes; I have an office in Washington. 

The Chairman. Is there any objection to giving the names of the 
nurserymen whom you represent? Of course you need not, if you 
object to doing so. 

Mr. Johnson. I can do that very readily. I would say that I 
represent a very large number of these gentlemen. Among the most 
prominent of them are the White Nurseries, of Massachusetts: Charl- 
ton & Son and Jackson and Perkins Company, of New York State; 
the Graves Nurseries and Crawford Nurseries, of Ohio; the Stark 
Nursery, of Missouri; the Burbank Experimental Farm, of Cali- 



AKGL'M?:NT on H. K. 13570. 13 

fornia: llic liochinan Xursories. of Arkansas: the Snoeds Nurseries, 
ilie lexas Nursery Coinpany, AVoods' Nurseries, and Fowler's Nur- 
series, of Texas: and anion^ originators are N. B. White. Matthew 
CVawford. K. A\'. Kirkpatriek. W. J. Graves. C. W. AVood. John 8. 
Kcir. Jo-cph Hachnum, C\ H. Perkins. M. E. Fowler. ,h\coh Moore, 
Liitlier Ihirhank. and a nuniher of others. 

'J he CiiAiHMAN. Now, the committee woukl be very gh\d to hear 
you on the constitutionality of a hill so very hroad in its seope as 
this — a hill that seems to undertake to re«rulale connneree within the 
Stato jis well as interstate commerce. 

.Mr. JoMNSi.N. I have not thou<rht of the constituti(tnalitv of the 
l)ili other than that Con^re.-s has power to pass a hill of this kind 
under the section of the Constitution which provides for patents. 

The CiiAimiAN. Not at all. The Supreme Court has distinctly 
lield that we have not any nower at all under that clause. 

•Mr. Hoxyx(;e. Over trade-marks. 

Mr. Johnson. I was merely speaking to the principle of protec- 
tion in any form or one form. 

Mr. HoNYNOE. Vou mi^dit work out somethin«r under the patent 
<lau-e of the Constitution. 

J'he CiiAiKMAN. This hill, as now proposed in ii- amended form, 
is an anuMidnieiit to the lionyn«re tra«le-mark 1»;11. 

Mr. Johnson. I am not prepared to py into the constitutionality 
of the <|ue>tion. Anythin<r that I mi«rnt say here would be prin- 
cipally otlhaiid. and it wouM not hr worth <"on>ideration. 

Ml-. IIiNMiAw. Would ii not he worth while to study up on that 
<|ni'>lu)n and a|)pear at anothei' tiiue^ 

Mr. Johnson. I can prej)are a brief an»l .-ubmit it. 

The Cn.viRMAN. I think you should address y<»ur>elf to that alto- 
fjellier. 

Mr. HoNVN(;f:. ^'ou can addre» your.-elf to the pi'oposition that 
there is some authority for the law. First you mu^t convince u^ that 
we have the powi'r. 

Mr. Chankv. Let u< hear from you airain aft«'r \oii ha\e ^n\en it 
tleliberation. 

Mr. Khhv'. I would like to ask that >ame |)rivile<r,.. 

Tlie Chah{Man. Certainly: it will be irranted. 

Mr. Chankv. The ^r«'ntleman fn.m .\ii>>ouri |Mr. Clark] looks as 
ihou<rh he had somethin<r to say this mornin<r. 

Representative Ci.ahk. of Missouri. T have never read tlie bill and 
have not studied the >ubjei-t of the constitutionality of it. 

Mr. CiiANEY. This is a question of the Constitution between freinds. 
[T^auirhter.] 

Mr. lIiNSHAW. Did you come here in behalf of this bill i 

Mr. Clark. No: I came here to hear what was said about it. I 
know this in a <roneral way that the n\u*sery people in the country 
are in favor of it. I suppose I have as nnich nursery work in my 
Con^rressional district as any district in the Ignited States. The 
Stark l^rothers are in my district, and it is supposed to he the largest 
establishment in the world. By the way. it has a branch out near 
Denver. It was established in 1835, and I think in its ramifications, 
countin<r its outside plants in one State and another — it has two 
plants in New York State — it is the largest in America. But all of 



14 ARGUMENT ON H. R. 13570. 

them are in favor of it. There is one down in New Haven about 
half as big as Stark's. I never thought of the constitutional phase 
of it. I used to be on this committee for a long time. I wanted to 
hear both sides, as to what they Avanted to say. If the bill is not 
exactly right in its terms at present, it might be recast. 

Mr. BoNYXGE. You know^ the Supreme Court has held that our 
whole power over trade-marks comes under the interstate clause in 
the Constitution. That is where we derive all our power over trade- 
marks. This bill seeks to include some of the features of the patent 
law. It may be that a bill could be drafted under the patent law, 
but I do not see hoAV any could be drafted under the trade-mark law 
to accomplish what these gentlemen seek to accomplish. 

Mr. Clark. Of course if there is a constitutional question, that is 
the first question to be disposed of. If there is any way of taking 
away some of the poAver of the Interstate and Foreign Commerce 
Conmiittee by this bill, I am in favor of it. It has now got too much. 
It runs the Avhole Congress. [Laughter.] 

Mr. Chaxey. Mr. Chairman, I A^ery much sympathize Avith the 
purposes of the bill, for I belieA^e that the people Avho are improving 
agriculture and horticulture are a A-ery valuable element of our 
civilization, and if it is possible for these men to figure out some bill 
by Avhich Ave can be of serA ice to them, I Avould certainly be in favor 
of it. I hope, therefore, these gentlemen Avill all giA-e us some assist- 
ance in looking up the question, and I suggest that Ave ourselA'es 
giA-e a little time to looking it up and see if Ave can not come to a 
common basis Avhere Ave can be of use. I have some nurserymen out 
in my country Avho haxe Avritten to me about this bill, and they have 
called upon me Avith great deliberation to support this bill. 

The Chairman. I might say that you will find that the nurserymen 
are diAdded on this question. Protests haA'e reached the committee 
from great nurserymen against the passage of the bill. 

Mr. Chaxey. I have had one i)rotest. The rest are all in favor of 
it. But, on the general proposition iuA^oh^ed, it seems to me the sug- 
gestion is valuable, and I can not see but that there ought to be some 
means of protecting these people, because they hiwe certainly been 
A^ery A' aluable— the propagators as Avell as the other people mentioned 
in the remarks of the gentleman. 

IMr. Clark. There is no question in the Avorld but that Luther Bur- 
bank has done as much for the comfort of the people and the world 
generally as any man noAv liAdng. I make that assertion Avithout any 
hesitation at all. 

Mr. BoxYXGE. We have not considered the constitutional ques- 
tion — that is, on the general features. 

Mr. Chaxey. I liaA^e a constituent Avho has gotten up a design of 
a combination trade-mark, and he has included in his proposed trade- 
mark something like fiA^e other trade-marks for a brand of flour. He 
lias, for instance, the Avord " Eclipse," I think it is, at the top of the 
sack of flour; a picture of an eclipse of the sun, or the face of the 
sun, and beloAv that he has the Avord " Eclipse." Now, nobody ever 
had a picture of an eclipse, but the Avord " eclipse " has been used by 
another man. Down beloAv is a picture of a doA^e holding in its beak 
a streamer, on Avhich is Avritten " White silk." Nobody has cA^er had 
a doA^e in the picture, but the Avords " AAliite doAe " and '' White silk " 
are in other trade-marks which are cited. 



AKGUMENT ON H. K. U"d). 15 

Mr. I'>()NVN(;i:. I do not think that on<rht to bi^ ro<ristiMV(l. 

Mr. Cii.WKV. And still below that are the words, " The Hest." 

Mr. H()Nvn(;k. His object was to <ri't the benefit of those other 
trade-marks, evidently. 

Mj". Chankv. No: by no means. He wa> not seekinir to iret the 
l)eiieMt of anythin<r but his own business. Hut he liad no idea thai 
anyl)ody (d>e had tiiose at all. and noixxly ha<l it as he lias. 

Mr. l>nN '\-N(.K. I would turn him down riirht away. 

Mr. ( "iiAM'.'i'. AMiat i^ the rea>on why a man can not have a irade- 
maik in combination with other tradf-marks ^ 

Mr. lioN^ .\(;i:. It woidd lead to confn-ion. and it deceivo the pub- 
lic Vou would destroy the \alue (d" all trade-mark- by that method. 

Mr. (ill. I.. .Mr. ( liairman. would vou <"ill that au omnibus irade- 
maik i I Lau«rhter. | 

Mr. ( 'iiA.NJii . I would call that a combination. Nobody ha- any- 
thinjr new iri a patent-ri^rlit line. It i>- all combination. 

Ml". HoNV.\<;i:. Articles are sold under a uam«', and if a man knew 
that the other trade-mark- wei*e re«ri>t<M'ed. the object of takiuir the 
other tiade-mark- would be to combine in his trad«'-mark tln» bi'iielit 
that the other> had irot by a«lvert isin«r lii> ).articidar article. 

Mr. M<(iAviN. Su|)])ose the parlor match had not the blue rihbon 
on tlu're and soiuebotly el-e came alon^ ami put it on ' 

.Mr. KiitK. Ml*. Crawfonl. who say>^ lie is ac<piainted with ail ihe 
uur-erynien in the (nited State-, -ays that the only (»ne- who are o|)- 
po-ed t<> thi- bill :ire j)rincipally commercial men. They are not 
inten'ste*! in proj)a;ration. 

The CiiAiuMAN. (Ireen c^ Co., Klwaii<r''r I'lc Harry, and the Lrr<*at 
mii>erymen id" Koche-ler are oppo.-ed to it. Mr. Payne spoke to me 
for Klwan<j:er c^ I>arry. I think Mr. Perkins has also sj^oken to me. 

Mr. .Johnson. Tin* larL^e-t nur-<'rv or the wealthiest nur-ery in 
.New ^'ork State i- the .Ia<k>on-Perkins Company. That i> the one 
from which Mr. Kirk read a letter a few minutes a^o. The Starks 
are the larirest nur>erv com|)any in the world, haviuir n(»t oidy braiu-h 
mir-.eries but sub-idiary concerns throu«rhout the whole Cnit«»d States 
and in some forei<rn countries, and in capitalization it is four time.s 
lar«r<'r than any other c<»mpany in the United States. 

The CiiAiij.MAN. As a lawyer, you s<'e the difliculties iu)w that con- 
front the committee in trvin«r to act upon this bill. 

Mr. Johnson. There is no (piestion al>out that. 

The CiiAimrAN. If you will look this mattiM* up carefidly and come 
before the committee on almo-t any Wedne-day we will be very ♦rhtd 
to hear from you. 

^fr. Johnson. There will 1m' no necessity to a))j)oint a time? 

The (^iiAiioiAN. Not at all. Hut we woidd prefer you would ap- 
point a time, because sometimes we do not have a stenoofrapher here, 
and we would like to have your statement as a ])art of the record. 

Mr. Johnson. A week's notice that we woidd Ix* ready would be 
sufficient, would it ? 

The CiiATiJAfAN. Yes: that would be ample. 

Now, I desire to call the attention of the committee to a letter wliich 
I received from Mr. Arthur Steuart re^rardinir the bill IT. K. 13942, 
and Mr. Steuai*t incloses a letter from Mr. T(. H. Parkinson, of Chi- 
ca^ro. They desire that the latter shall be made a part of the record. 

Mr. Cii.XNEV. It relates to that bill ? 



16 ARGUMENT OT^ H. R. 13570. 

The Chairmax. Yes ; to that criminal feature of the bill. It is in 
reply to the brief filed by Forbes and Haviland attacking the consti- 
tutionality of the bill. Here it is. Suppose I read it [reading] : 

Baltimore. Md., March 21, 1906. 
Hon. F. D. Currier. 

House of Representatives. Washington. D. C. 

My Dear Mr. Currier : When I received a copy of Mr. Barber's brief I at 
once sent it to ^Ir. Robert FI. Parkinson, of Chicago, who had given careful 
'attention to the preparation of section 1 of H. R. 13942. 

I have a letter from hiui replying to Mr. Barber, and I inclose Mr. Parkin- 
son's letter herewith. I shall be glad to have this letter read to the committee 
and printed in your records. 

If any of your members would like to go more deeply into this question, they 
will find a most scholarly argument upon the subject by Mr. Parkinson in the 
proceedings of the American Bar Association for 1903, which will repay an ex- 
amination. I have asked Mr. Parkinson to notify me when he is coming East, 
and I should be glad to have the committee hear him upon this subject. 

In studying the bill 13942 I find that it can be somewhat simplified by 
eliminating some of the clauses. I send you a corrected copy and would be 
indebted if you would have the bill reprinted in the corrected form, with added 
section. 

Yours, truly, Arthur Steuart. 



Chicago, March 10. 1906. 
Arthur Steuart, Esq., 

Maryland Trust Building. Baltimore, Md. 

Dear Mr. Steuart : I have yours of 6th instant. There is but one suggestion 
I have to make concerning House bill 13942. It is the same suggestion I made 
in the paper read at the meeting of the American Bar Association in 1903, viz, 
that importing into the State and exporting therefrom should be explicitly 
defined as including shipments from and to other States and Territories as well 
as to and from foreign countries, otherwise the term might be construed as 
relating only to importation from foreign countries. I should think a short 
section at the end of the bill would be an appropriate way to coA'er this. 

I have today looked over the brief submitted under the name of Forbes Sc 
Haviland, to which you call my attention and which I had not seen. I find 
nothing in it to modify in the slightest degree my opinion that the power to 
regulate trade-marks as an instrument of interstate or foreign commerce in- 
cludes the power to protect such trade-marks as are used in interstate or for- 
eign commerce against any act which defeats or impairs the performance of 
their functions as instrumentalities of such commerce, irrespective of whether 
such interference be committed in one or more States. I understand the right 
to regulate and protect under this clause of the Constitution to be dependent upon 
the character of commerce in which the mark so regulated and protected is 
used, but I understand, further, that the right to protect such a mark as an instru- 
nlent of interstate or foreign commerce involves the right to forbid every act 
which defeats the object of such protection, irrespective of whether that act 
takes the form of interstate commerce or be confined to one State. 

The object of the regulation and protection of a mark used in interstate or 
foreign commerce is to make it effectual as an instrument of such commerce and 
safeguard it against whatever will impair the performance of its legitimate func- 
tion in such commerce. The trade-mark affixed to articles of foreign or inter- 
state commerce is the identification accompanying such articles from the 
manufacturer in one State to the purchaser in another State, by which the 
commercial transaction is guided and facilitated. It is an instrument par- 
ticipating in this commercial transaction, accompanyng the subject of com- 
merce, and depended upon by the purchaser in one State as an assurance that 
he is obtaining the article made at the place and by the person with which such 
trade-mark has become associated. It is depended upon by the manufacturer 
to identify his goods in every State to which they go. 

The performance of this function as such an identification and guaranty in 
the commerce carried on between the State where the article is made and im- 
pressed with this trade-mark and the State where it, is sold is just as really 



AKCJlMENr ON H. K. i;J570. 17 

interfered with l>y a fraudulent imitation of such trade-mark made and i)ut 
upon tht' market in either Statr to whieh such .irenuinc i:oo<ls arc imported or 
from which tliey are exporte<l ;ts if the fraudulent imitator s€Mit his fraudulent 
imitation across a State line. The jurisdiction of Congress t<» give protection 
depeuils ui)on the oflico jicrformed l»y, the i»roteeted trade-mark in interstate 
commerce, not upon whetlier the counterfeiter is engaged in interstate com- 
merce. The right to protect the mark having attached to it as an instiumcnt 
of interstate conunerce. and it having thus come under the jurisdiction of 
Congress, it is not necessary to inquire whether the act by wliich this i)rotec- 
tion is defeate<l or d€»stroyed is one over which Congress wouhl liave jiuMsdie- 
tion indei»endent of its jurisdiction over the interstat<' connncne in which the 
genuine mark is use«l. I have i)rcsented this subject more fidly in the article 
found in the Uei>orts of the American P.ar Association for IfMC, (especially 
pp. <)08-H4:;». an<l see no object in repeating what I have there said. 

The attack ujron my article in the brief above n'fernMl to seems t<» lose sight 
entirely of the fact that the jurisdiction of Congress to protect interstate coni- 
morce is not limite<l to its protection against acts which themselves constitute 
interstate ctmnnerce. If it were so limited it would be altogether inefftH-tual. 
and most of the laws which have be<Mi jrasseil under this clause of the Consti- 
tution, and the decisions of the .*<upreme Court supporting and enforcing these 
laws, wouhl In. abrogated. It also seems t<» pr«H-ee<l ui>on the assumi>tion that 
no a<t which otherwise would be within the police power of the State c:in be 
prohibite<l or i>nnish(Hl as interference witli interstate conunerce. an assumption 
also in dire<t c<in(lict with the <le<isions touching this sul»ject. 

As m<»re fully state<l in my article above mentione<l. the jwtwer of Congress to 
prohibit an«I punish acts that interfere with any instrumentality of interstate 
c*ommerce conc-erning whi<h it has legislateil does not depend ui>«>n whether 
such acts as are prohibite<l and piniished wouM themselves jiartake of the 
nature of interstate commer<-e. It is <'nough that they interfere with or tend 
to defeat tin- objf'ct of safegiiards whi<h Congn'ss has jtrovided for su<Ji com- 
merce, «»r impair the etiicacy of its regulati(»ns (•on<'»M'ninL' such commerce. 
Nor does an act which interferes with any safeguard jirovided for such com- 
merce es<'ap«' CongH'ssioii.il contr<d because it is (»f such a character that it 
might be piniished under the p<dice powers of the State. A very large pro- 
jwrtion of the acts which have Imh'u treated as interference with interstate 
commerce are acts which, considen^l apart from this, would be punislRil as 
crimes against the State. 

From the decisions of Chief Justice Marshall in McCuUoch r. Maryland (4 
Wheaton. :n«»t an<l (Jibbons r. Ogden iU Wheaton. 1 ). and Justice Story in Cnited 
States *•. Coomltes ( V2 Teters. 7"J » down to the r(»<'ent (bK-ision of the Sui>renie 
Court In re I »ebs ( l.~»S C S.. r»r.4 » the jMJwer to jtunish acts which in themselves 
would be violations of tln' indice iM>wer (»f the State, which were conuiiitte«l only 
within one State, .and which were not in themselves acts of interstate conunerce. 
has been unifonnly recogni/-«*d. it bein^' enough th.it they interf«'n'<l with some 
regidation of Congress int<Mided foi- the promotion or convenience or safeguanl- 
ing of interstate coumierce. 

1 am not asserting :iny light of Congress und«'r this jtrovision of the Consti- 
tution t<» go bey<»nd reirul.iting and protecting marks used in interstate or 
foreign «'onimer<-e. Imt merely ass<'rting tli.at when it undertakes to regulate and 
jd'otect the us«' of traile marks :is instruments of su«li (••»mnu*rce it <an inake 
this etYectual by itrohil»iting wh.-itever acts would render such regulations and 
)»rotectioii ineffectu.il or def«'at or impair the s.ifeguanl to sxuh commerce which 
Mich marks are intended to atTord. To counterfeit such marks and place them 
niMUi goiMls of similar character in any State where imported goods bearing the 
lirotect<Ml mark are s<dd is to nullify the protintion extended to that m:irk as a 
saf«'guar(l to su«'h interstate or foreign commerce. This eflfect is nullifying and 
defeating the <»bject (tf Congressional legislation is pre<-isely the same whether 
the coiinterfeit mark is .Mpplie<l to goods brought from an(»tlier State or to goods 
maile .and markete<l in the s.ime State. Such counterfeiting is i»rohibite<l .and 
punished because it destroys the protection afforded to the interstate commerce 
to which the genuine m.irk is attache*!. n<»t I»ecause the «ounterfeiting is in itself 
an a«'t of interstate conunerce. 

The brief alK)ve menti(»ned charges that my contention (more fully stated in 
my article in the HeiMU'ts of the American Bar Association) is in error in 
assuming that the perfect protection and ultimate purpose of a trade-mark in 
commerce is involved in the power to regidate the use of these marks in inter- 
state and foreign c<»nnnerce, but it admits that *' so long as an infringer is able 

H. R. 18570—06 2 



18 ARGUMENT ON H. R. 13570. 

to make use of au infringing mark within a single State without making himself 
amenable to process of the Federal courts the protection afforded by the 
Federal statutes will remain in a degree imperfect." The fact is that the whole 
object of Congressional regulation of marks used in interstate or foreign com- 
merce is effectually defeated if they can be counterfeited in every State of the 
Union with impunity, so far as any protection given by the statute is concerned. 
A trade-mark that can thus be counterfeited with impunity wherever it goes 
ceases to afford any protection to the connnerce in which it is used. To make 
the trade-mark effectual as an instiiiment of interstate or foreign commerce 
with which it is identified it nuist be protected against any fraudulent imita- 
tion, and the object of such protection is to secure to it its legitimate function 
as a safeguard to such interstate and foreign commerce. 

The proposed bill (13942) is so drawn as to plainly limit the protection 
afforded to marks used in interstate and foreign commerce or commerce*^with the 
Indian tribes, and every provision made therein is essential to any substantial 
protection to such marks as instruments of such commerce. No act is punished 
or prohibited excei)t an act which interferes with and is prejudicial to the pro- 
tection of such marks as instruments of such commerce. 

We have undertaken by treaty to give protection to trade-marks of other 
countries when used in commerce with this country. Our treaty obligations are 
not limited to protection against acts that are committed in more than one State, 
but plainly include protection against whatever interferes with the exclusive 
right of the owner of the mark used in commerce with this country. 

We are persistently false to our obligation if our statute affords no protection 
against infringement committed in any State of the Union, unless that in- 
fringer is also engaged in foreign or interstate commerce. Hence, if a statute 
giving protection could not be maintained under the commerce clause, there 
should be one under the treaty clause so framed as to give protection against 
infringement in this country of trade-marks belonging to citizens of the coun- 
tries with which we have such treaties. But it comes to me entirely clear that 
the power under the interstate and foreign commerce clause is adequate to give 
complete protection to trade-marks used in such commerce, and that uniformity 
in the regulation of commerce between the States as well as commerce with 
foreign countries demands the exercise of this po^yer by Congress. 
Yours, very truly, 

R. H. Parkinson. 

Mr. BoNYNGE. He makes a pretty strong argument. 

Mr. Chaney. That is good philosophy, too. 

Mr. BoNYNGE. But the first question that must be determined is 
Avhether the trade-mark at all comes within our power. That is now 
before the courts, and consequently, even if I felt disposed to extend 
the protection further than we have in the bill, the Supreme 
Court 

Mr. Chaney. I have observed this, that the Supreme Court of the 
United States grows with our institutions, and that its ideas as to the 
liberties permitted under the Constitution are, under the opinions of 
the Sui)reme Court of our day, much more extensive than they were 
under the opinions of the Supreme Court of days gone by; and I be- 
lieve that there is such enterprising growth in these matters that we 
are beginning to see that the limits of our Constitution are far be- 
yond what they used to be. I sincerely hope that the Supreme Court, 
when it gets to the question now before it for decision, will see its 
way clear to permit some of these tilings which ^\e hardly thought 
Av.re permitted under the Constitution formerly. 

IVIr. Gill. I think that Mr. Chaney is fast getting to that opin- 
ion held by some distinguished citizen of this country, " 'VMiat is the 
Constitution between friends? ■' [Laughter.] 

The Chairman. It occurred to me that perhaps he was adopting 
Mr. Dooley's theory, that '' the decisions of the Soopreme Coort fol- 
low closely afther the eliction returns." [Laughter.] 



ARGUMENT ON H. R. 13570. 19 

Mr. Chaxev. The i)urpose is a good one, that which makes for the 
hi<rh('r civilization, which conies from the men who think and act; 
and those arc the people who are doing this in their branch of in- 
quiry, and I hope we can get at it. 

Mr. BoNYNGE. I think we can well afford to wait until the court 
has pas>cd ui)on it. 

The C'liAiHMAX. They have raised the question of the constitution- 
ality of the Bonvnge bill now; that is on its way to the Supreme 
Court. 

Mr. Bon VN<.K. I think we have a pretty good bill, provided we can 
maintain it. 

Mr. Chaney. Yes: 1 think the bill which bears your name, and 
which went through thi> comniittee, marks an advance, and I am 
heartily in favor or it. 

The Chairman. As chairman of the c(nnniittee in the last Congress, 
I want to say that that bill is a great deal more the Bonynge bill than 
would be inferred sim})ly from the fact that it bears the name of Mr. 
Bonynge. That bill wa> drawn, every word of it, by Mr. Bonynge, 
after tlie mo>t painstaking investigation. 

Mr. BoNYNOE. Of course I had the benefit of the views and argu- 
ments presented to the committee. 

The Chairman. Yes: but Mr. Bonynge is entitled to the credit in 
a large degree for that h^gislation. 

Mr. Chaney. I wanted Mr. Bonyn<re to give to the committee and 
the country the i)eneHt and service ot investigating this proposition. 

|Thereup(»n. at 1*2 o'clock noon, the conunittee adjourned.] 

o 



LIBRARY OF O^ -SS 




19 923 859 



^ N -"V. 



s V 



\ 



•4 



LIBRARY OF CONGRESS 



' 



e 019 923 859 



